IPBiz

Intellectual property news affecting business and everyday life

Tuesday, December 30, 2014

Patents on pot?

See post in Denver Post on pot:

--

No one is stealing from Holmes, a self-taught scientist, engineer, farmer and cannabis seed geek who next month will take a rare step to apply for a patent on a laboriously created cannabis superstrain.

If it is awarded, the U.S. patent on Holmes' medical-grade Otto II strain will be the first to protect a cannabis plant and a first step in establishing plant-breeder rights for growers who only a few years ago were considered criminals.

LiveScience takes on Dr. Oz and publications in obscure journals

LiveScience on Dr. Oz report on coffee beans:

Oz himself has been mum about the incident. According to an article in the Washington Post on Oct. 22, 2014, "Oz's Web site has been entirely scrubbed of almost every mention of the green coffee extract, including the episode touting the product."

But here's what Oz said on his show back in 2012: "You may think magic is make-believe, but this little bean has scientists saying they found a magic weight-loss cure for every body type. ... This is very exciting, and it's breaking news."

Yes, breaking news, as in published by paid researchers in an obscure journal and announced on an afternoon talk show. Fortunately for Oz, he hasn't been embarrassed by other retractions concerning the dubious information he relays about weight loss, anti-aging and miracle cures. Then again, most of that stuff hasn't been published.

Recall, earlier in 2014, Dr. Oz was admonished in the US Senate:

“I don’t get why you need to say this stuff because you know it’s not
true,” Missouri Sen. Claire McCaskill, a Democrat who chairs a Senate
subcommittee on consumer protection, said at the hearing. “So why, when
you have this amazing megaphone…why would you cheapen your show by
saying things like that?”

Monday, December 29, 2014

Dietzen proposal in Forbes neither modest nor correct

Back in 1789, when the first patent was granted, patent terms didn’t exceed 14 years.

As wikipedia notes:

On July 31, 1790, [Samuel Hopkins] was granted the first U.S. patent, under the new U.S. patent statute just signed into law by President Washington on April 10, 1790.

As reported in ExplorePaHistory, Hopkins never made a profit. ExplorePaHistory notes of the Act of 1790

The American board members took their responsibilities seriously,
rejected many applications, and issued fifty-seven patents between 1790
and 1793. Deeply concerned about Europe's technological superiority, and
the need to stimulate American innovation, critics pushed for new laws.

The Patent Act of 1790 was replaced by the Patent Act of 1793, which made it easier to obtain patents.

Of the Forbes text

The point is, technological innovation unfolds at a stunning rate.
Rather than allowing 20-year old patents to block innovation, we should
ensure that our patent system supports and nurtures innovation.

one recalls the story of Chester Carlson and xerography, which took more than 20 years to unfold into commercial relevance.

One also notes that the time frame of 20 years from priority filing date arises from attempts to harmonize with the law of other nations, rather than some selection peculiar to the U.S.

This December 22 article notes that Haruko Obokata resigned from RIKEN. It also states: " A few weeks later [after the retraction in July], one of the paper’s co-authors, Yoshiki Sasai, took his own life. "

Thursday, December 25, 2014

Nevada "plagiarism" issue fades into the sunset

On December 24, the Las Vegas Review-Journal reported that Nevada Board of Regents leaders would not be looking further into allegations of plagiarism arising from the use of text by a government official derived from a preliminary report of a think tank [Brookings]. Of details:

The dispute concerns a report the think tank provided to higher education officials for background that wound up used verbatim and without attribution
by a system official in a presentation to an interim legislative
committee in June as part of an effort to create a multimillion-dollar
grant program designed to improve the state’s workforce in “STEM”
industries of science, technology, engineering and math.
Brookings
didn’t finish its research until November. While the wording is largely
identical, there are meaningful differences in the proposals.
Brookings
and NSHE recommend different amounts of money: Brookings puts it at $5
million, NSHE at $3.5 million. In addition the two have different ideas
about who will control that money. Brookings recommends local
redevelopment agencies administer the grant funds, while NSHE recommends
a council of representatives from various agencies, including NSHE,
manage the money.

The published discussion has revolved around the use by the government official of text without attribution. The issue is one of plagiarism and academic integrity.

But, if one looks at this from the point of view of copyright law, and of "work for hire," things appear a bit differently. In copyright law, in a work for hire, the "author" is the one who pays for the work, not the one who creates the work (recall the Supreme Court case CCNV). The "author" would have the right to reproduce the work.

In the realm of patent law, this presents an interesting issue as to legal opinions on patents.
A law firm prepares an opinion, say on a drug patent, and conveys it to client A. But then client B would like an opinion on the same drug patent. Does the law firm convey the same opinion to client B, and charge the full amount for rendering (a previously done) opinion? But is client A really the "author" (and owner) of the opinion under copyright law?

A related issue arose at Southern Illinois University when an official took work done for a previous university and "re-purposed" it for a task at SIU. Although SIU determined that this self-plagiarism was not a problem [a questionable decision], the true victim was the other university.

Returning to the Nevada matter, if there were an agreement as to the confidentiality of the Brookings work during some time period, the action of the Nevada official would be problematic as to that confidentiality. However, as to the ownership of the content (and "how" attribution is allocated), the "author" is the person who paid for the work for hire.

Contemplate also the Supreme Court Dastar case. For material in the public domain, anyone can claim to be the author of such public material, without running afoul of federal law. Such an action would be plagiarism, but it's not against federal law.

In a story about copying, note from AP

BILLINGS, Mont. (AP) - Plagiarism revelations involving U.S. Sen. Jon
Walsh and his subsequent political collapse marked Montana’s top news
story of 2014, according to The Associated Press’ annual poll of state
editors.

PTAB in Ex parte Stralin: the name of the game is the claim

We note that
"[i]t is a bedrock principle of patent law
that the claims of a patent define the
invention to which the patentee is
entitled the right to exclude."
Phillips v. AWH Corp., 415 F.3d 1303, 1312 (Fed. Cir.
2005) (en banc) (internal
quotations omitted). In other words, “the name of
the game is the claim.”
In re Hiniker Co., 150 F.3d 1362, 1369 (Fed. Cir. 1998).

Nintendo not guilty of patent infringement; prevails in D. Wash. case over UltimatePointer

On Dec. 22, Nintendo won a patent case in a federal court in Seattle.
Judge Robert S. Lasnik found that Nintendo’s Wii system does not
infringe two patents asserted against Nintendo by UltimatePointer, LLC.
Judge Lasnik also found a number of UltimatePointer’s claims invalid,
and decided, as a result of these decisions, that no trial is needed.

“We are very pleased with these decisions, which confirmed Nintendo’s
position from the beginning – we do not, nor have we ever, infringed
these patents”

Judge Lasnik’s decision follows earlier decisions for Nintendo by Chief
Judge Leonard Davis of the Eastern District of Texas, which occurred
before the case was transferred to Seattle. Judge Davis similarly held
that Nintendo did not infringe certain asserted claims and that others
were invalid.

“We are very pleased with these decisions, which confirmed Nintendo’s
position from the beginning – we do not, nor have we ever, infringed
these patents,” said Richard Medway, Nintendo of America’s vice
president and deputy general counsel. “The result in this case, once
again, demonstrates that Nintendo will continue to vigorously defend its
innovations against patent lawsuits, even if it must do so in multiple
courts and commit significant resources to defend itself. Nintendo
continues to support reform efforts to reduce the unnecessary and
inefficient burden patent cases like this one place on technology
companies in the United States.”

"We are very pleased with these decisions, which confirmed Nintendo’s
position from the beginning – we do not, nor have we ever, infringed
these patents," said Richard Medway, Nintendo of America’s vice
president and deputy general counsel. "The result in this case, once
again, demonstrates that Nintendo will continue to vigorously defend its
innovations against patent lawsuits, even if it must do so in multiple
courts and commit significant resources to defend itself. Nintendo
continues to support reform efforts to reduce the unnecessary and
inefficient burden patent cases like this one place on technology
companies in the United States."

The PTO has the burden under section 103 to establish a prima facie case
of obviousness. See In re Piasecki, 745 F.2d 1468, 1471-72, 223 USPQ
785, 787-88 (Fed.Cir.1984). It can satisfy this burden only by showing
some objective teaching in the prior art or that knowledge generally
available to one of ordinary skill in the art would lead that individual
to combine the relevant teachings of the references. In re Lalu, 747
F.2d 703, 705, 223 USPQ 1257, 1258 (Fed.Cir.1984); see also Ashland
Oil, Inc. v. Delta Resins & Refractories, Inc., 776 F.2d 281, 297 n.
24, 227 USPQ 657, 667 n. 24 (Fed.Cir.1985); ACS Hosp. Sys., Inc. v.
Montefiore Hosp., 732 F.2d 1572, 1577, 221 USPQ 929, 933 (Fed.Cir.1984).
This it has not done. The Board points to nothing in the cited
references, either alone or in combination, suggesting or teaching
Fine's invention.

The text in the PTAB decision is a bit different. PTAB also cited In re Kahn for "articulated reasoning."

However, in the Rees case PTAB affirmed the rejection for obviousness.

Although there was a missing element as to claim 1, PTAB noted "Titemore [a reference] suggests it would have been obvious." PTAB criticized the Appellants for not providing reasoning beyond stating the element was missing. Thus, one needs to explicitly argue why the references don't suggest the missing element.

Biofuel worker Roy Curtiss honored at Arizona State University

From ASU news, which noted Curtiss was appointed University Professor:

Roy Curtiss is a professor in the School of Life Sciences and the director of the Centers for Infectious Diseases and Vaccinology and Microbial Genetic Engineering in the Biodesign Institute. He is a member of the National Academy of Sciences and a fellow of the American Academy of Microbiology, the American Association for the Advancement of Science, the St. Louis Academy of Sciences and the Arizona Arts, Science and Technology Academy. His research uses microbial genetic manipulation to address problems of global concern, including the development of live vaccines to reduce the destruction and death caused by infectious disease agents of fish, poultry, swine, cattle and humans. His recent research emphasizes the design and construction of cyanobacterial strains to maximize production of biofuels and biofuel precursors. Curtiss has more than 360 journal articles to his credit. In 2014, he received a Lifetime Achievement Award from the American Society for Microbiology and the AZBio Pioneer Award for Lifetime Achievement by the Arizona BioIndustry Association.

Tuesday, December 23, 2014

Plagiarism problem in Nevada?

In cases involving allegations of plagiarism, one frequently finds a wide range of third party commentary, ranging from "what's the problem" to "off with their heads." In the past, the Glenn Poshard matter at SIU showed such response, and the current matter in Nevada involving a report by Brookings Mountain West is no different.

It’s common knowledge that when copying large sections of language one
should use quotation marks. In addition to the plagiarism accusation,
the scandal has also been called intellectual property theft and a basic
violation of the trust that is essential for vetting academic research.
The Brookings report that was copied was an early draft that had been
sent out for feedback with a label saying “do not circulate.” Brookings
rolled out its final version in November.

One IPBiz reader asked about Chu. Back in 1987, the New York Times reported part of the story:

Ytterbium
was indeed the element named in the manuscript that had been submitted
by Chu's team, relative unknowns at the University of Houston, to
Physical Review Letters, the premier journal for reporting breakthroughs
in physics. But when the journal appeared on March 2, the final paper
named a different element, yttrium.

Chu had pleaded with the journal for special handling, insisting on secrecy, fearful that the editors would leak. ''Which we now know they did - like a sieve,''
says Arthur J. Freeman, a theoretical physicist at Northwestern
University. ''Only they leaked ytterbium instead of yttrium. I had heard
for weeks that the material was ytterbium, and now I know where it came
from.''

There was little doubt that Chu's "ytterbium" idea
was stolen through leaks at PRL. Chu however had placed an incorrect
idea in the PRL drafts, so the thieves got worthless chaff, but had the
audacity to complain about it.

Also in the NYT article:

As
news of the yttrium-ytterbium affair spread through the scientific
world, the journal's editors denied vehemently that they had divulged
the secret. They privately expressed anger at Chu, suspecting an intentional deception on his part to mislead competing researchers.
(Chu's friends share the suspicion. They have been retelling the joke
about the king who leaves to his favorite knight the key to his queen's
chastity belt, only to hear the knight gallop up behind him, shouting
angrily, ''It's the wrong key.'')

As an IP footnote, see also
http://ipbiz.blogspot.com/2012/11/cafc-rules-on-1980s-1-2-3.html

The Wall Street Journal notes that Rockstar will sell about 4000 patents, once purchased for 4.5 billion, to RPX, for the price of $900 million (0.9 billion). Within the article

“Peace is breaking out,” said
John Amster,
the chief executive of RPX. “I think people have started to
realize that licensing, not litigation, is the best way to make use of
patents, and this deal is a significant acknowledgment of that reality.”

The Rockstar Consortium, an Apple-led group formed in 2011 to buy Nortel Networks’ patents, will sell
the bulk of those to RPX, a patent clearinghouse that acquires the
rights to intellectual property to license to its members. RPX plans in
turn to license those patents to a group of more than 30 companies,
including Cisco and Google.
Rockstar, which in addition to Apple includes Microsoft, BlackBerry
and Sony, spent $4.5 billion for the 6,000 patents auctioned by bankrupt
Canadian telecom giant Nortel. Rockstar transferred about 2,000 of
those patents to individual consortium companies, and spent the years
since then licensing the remaining set to the wider tech world and
taking to court those who allegedly used the technology without properly
paying for it.
That hefty price tag Rockstar originally paid kept the patents out of
Google’s hands, and also beat a bid by RPX. (Google memorably offered
pi and other mathematical constants in its own attempt to buy the patents)
But the temperature around smartphone litigation has cooled in the
past year or so, reflecting a growing realization that forking over
reasonably fair fees is cheaper than spending years in court. Apple and
Google reached a deal to end their smartphone patent court fight in May. Rockstar, for its part, settled suits with Google and Cisco last month.

Sunday, December 21, 2014

"60 Minutes" on December 21, 2014

Musicians could not give copies of music because no photocopiers in Cuba.

Only 5% of Cubans connected to the internet.

500 Cubans per day seek visas to u.s.

Lesley Stahl interview with Tom Coburn. Tom will be ending his term two years early.
He is friends with Barack Obama. Obama is a smart nice guy. Friendship began in 2005.
President Obama has not done a good job of reaching out. Senators make decisions to benefit
Their career, not the country. Coburn's power comes from killing legislation. Grind things to a halt.
Put a hold on legislation. Thousands of holds. Dr. No. Grew up in Muskogee.
Family optical business. At age of 31, Coburn went to med school. First campaign in 1994.
Picked a fight with Ted Stevens over bridge to nowhere. Issue of conflict of interest over practicing medicine and being a senator. Worked with Barack Obama. Now prostate cancer. How do you use each day to move things forward?

Saturday, December 20, 2014

In all, Uber has filed for 24 patents worldwide, according to Innography. The four earliest date back to December 2009, when the company was co-founded by Garrett Camp and Chief Executive Officer Travis Kalanick, who were named as inventors on the applications.

The first claim of US 20110301985 recites:

A computer-implemented method for operating a service to arrange transport between a customer and a driver, the method being implemented by one or more processors and comprising the steps of: (a) responding to a request by a customer at a first geographic location for transport by selecting a driver at a second geographic location to transport the customer; (b) upon the customer being picked up by the driver, tracking the customer and/or driver from the first geographic location to a third geographic location; (c) determining a fee for transport of the customer from the first geographic location to the third geographic location; (d) enabling the customer to provide a feedback to affect a service reputation of the driver upon completing transport.

The first claim of US 20130246207 titled SYSTEM AND METHOD FOR DYNAMICALLY ADJUSTING PRICES FOR SERVICES is

A method for adjusting prices for services, the method being performed by one or more processors and comprising: making a determination of an amount of requesters for a service at a given time; making a determination of an amount of available service providers for providing the service at the given time; adjusting a price, relative to a default price, for using the service provided by one or more service providers based, at least in part, on the determined amount of requesters and the determined amount of available service providers; and transmitting pricing data corresponding to the adjusted price to one or more requesting devices or one or more provider devices so that the adjusted price can be displayed on at least one of the one or more requesting devices or the one or more provider devices and be indicative of an adjustment in price as compared to the default price.

CAFC reverses willful infringement in Stryker v. Zimmer

The CAFC illustrated the difficulty the patentee faces in meeting the objective prong of Seagate.

From the decision:

The district court failed to undertake an objective as-
sessment of Zimmer’s specific defenses to Stryker’s
claims. Instead,the district court’s analysis of objective
reasonableness summarily asserted
that the “jury heard testimony” that Zimmer “all but instructed its design
team to copy Stryker’s products.”
(...)
A
n objective assessment of the case shows that Zim-
mer presented reasonable defenses to all of the asserted
claims of Stryker’s patents

What may have started as some academic thoughts from Cecil Quillen, later pushed by Mark Lemley (and others), ended up being mainlined to foster the economic interests of those in the "Coalition for Patent Fairness." Chisum got it right in his law review article. As the vote in the House on HR 1908 illustrated, patent reform (at least this version) is NOT a Democrat/Republican issue. In New Jersey, Rush Holt voted AGAINST 1908 and Chris Smith voted for it; go figure.

Although PCMag had reported the vote as 225-175, the actual vote was 220-175.
A detailed breakdown of how each Congressman voted may be found at GovTrack.US.

The Democrats voted 160-58 in favor and the Republicans voted 60-117 against. One notes that some GOP IP heavyweights voted in favor of HR 1908, including Coble and Sensenbrenner. Within New Jersey, Republican Chris Smith voted in favor of HR 1908 (?!).

**Elsewhere in the "China" article

Carly Fiorina, a former chairman of Hewlett Packard who understands the importance of patents as well as anyone, has warned against the current push for overhauling the patent system. She notes that the proposed new rules would put patent holders at a greater disadvantage in court, and they would thus have a harder time preventing others from misappropriating their inventions and that the legislation would help big and powerful corporations at the expense of individual inventors and small companies.

In early January 2005, the Hewlett-Packard board of directors discussed with Fiorina a list of issues that the board had regarding the company's performance.[43] The board proposed a plan to shift her authority to HP division heads, which Fiorina resisted.[44] A week after the meeting, the confidential plan was leaked to the Wall Street Journal.[45] Less than a month later, the board brought back Tom Perkins and forced Fiorina to resign as chairman and chief executive officer of the company.[46] The company's stock jumped on news of Fiorina's departure.[47] Under the company's agreement with Fiorina, which was characterized as a golden parachute by some[by whom?], she was paid slightly more than $20 million in severance.[48]

Judgments on Fiorina's tenure at HP are mixed. In 2008, Infoworld grouped her with a list of products and ideas as flops, declaring her to be the "anti-Steve Jobs" for reversing the goodwill of American engineers and for alienating existing customers.

Prior to joining HP in 1999, Fiorina was at Lucent. The case -- Lucent Technologies, Inc. v. Gateway,Inc. --, concerning a patent filed by Lucent in 1994, was not exactly a model of Lucent understanding patents.

So author Erik Telford may have reached the right conclusion, but might want to present better analysis. There is no evidence that patent reform is a party-line issue
[recall Democrat Harry Reid deep-sixed the last big effort]. There is no evidence that Carly Fiorina understands the importance of patents as well as anyone.

Court of Justice of the European Union rules that parthenogenetic cells are not embryos; ok for patenting

An organism incapable of developing into a human being is not a human embryo and may be patented, the European Union's top court said on Thursday[18 Dec 2014], opening the door to certain stem cell patents in the European Union.

The court made this judgement following a case brought by US company International Stem Cell Corporation in Britain over whether it could patent processes covering the use of human egg cells

Myriad loses at CAFC

The claims on appeal are directed to ineligible subject matter
in violation of 35 U.S.C. § 101

Of separate note is the text

The Supreme Court ap-
proved of Judge Bryson’s general suggestion,
directly quoting him for the propositions
that “[a]s the first party
with knowledge of the BRCA1 and BRCA2 sequences,
Myriad was in an excellent position to claim applications
of that knowledge,” and that “[m]any of its unchallenged
claims are limited to such applications.” Myriad , 133 S.
Ct. at 2120. But, nowhere in the opinion did the Court
express approval of the individual claims identified by
Judge Bryson, much less of claim 21 in particular. In-
deed, no method claim was even before the Supreme Court.
Id. at 2119.

CAFC tackles Florida trade secret law in ABB Turbo v. TURBOUSA

Note the text below taken from the
case ABB Turbo v. TURBOUSA decided by the Court of Appeals for the Federal Circuit on 17 Dec. 2014:
--A plaintiff claiming misappropriation
of trade secrets under Florida law must
allege facts giving rise to a reasonable inference that

(1)“the plaintiff possessed secret information and took
reasonable steps to protect its secrecy,”Medimport S.R.L
v. Cabreja, 929 F. Supp. 2d 1302, 1322 (S.D.
Fla. 2013)(quotation marks and citation omitted);
(2) “the secret it possessed was misappropriated, either by one who knew
or had reason to know that the secret was improperly
obtained or by one who used improper means to obtain it,”
id.;see Fla. Stat. §688.002; and
(3) the secret “[d]erives independent economic value” from not being generally known or ascertainable through proper means, Fla. Stat.
§688.002(4)(a).

Monday, December 15, 2014

CBS Sunday Morning on December 14, 2014

Charles Osgood introduced the stories for December 14, 2014. The cover story was "Game On," done by John Blackstone on people treating "E-sports" as spectator sports. Second was Anthony Mason on Misty Copeland.

Anticipation is not the epitome of obviousness

Within a PTAB decision from 2013, one has the text

The same issues are dispositive of each obviousness rejection on appeal. First, each of the rejections for obviousness relies on the Examiner‟s
finding that Surjadi, as evidence by Stammer, identically discloses the apparatus of claim 36. “It is well settled that „anticipation is the epitome of obviousness.‟” In re McDaniel, 293 F.3d 1379, 1385 (Fed. Cir. 2002) (quoting In re Fracalossi, 681 F.2d 792, 794 (CCPA 1982). Accordingly, Surjadi also renders claim 36 obvious. Claims 37-69 fall with claim 36. 37 C.F.R. § 41.37(c)(1)(vii).

Despite the often quoted maxim that anticipation is the
"epitome of obviousness," In re Kalm, 378 F.2d 959, 962, 54 C.C.P.A. 1466 (CCPA
1967), novelty under 35 U.S.C. § 102 and nonobviousness under 35 U.S.C. § 103
are separate conditions of patentability and therefore separate defenses
available in an infringement action. See 35 U.S.C. § 282 (2000); Jones v. Hardy,
727 F.2d 1524, 1529 (Fed. Cir. 1984) ("[T]hough anticipation is the epitome of
obviousness, [they] are separate and distinct concepts."); see also Mendenhall
v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993) [p. 1364] (holding that
verdict of nonobviousness was not inconsistent with verdict of anticipation by
prior public use, despite "legal homily" that anticipation is the epitome of
obviousness); In re Meyer, 599 F.2d 1026, 1031 (CCPA 1979) (holding that
rejection under § 102 was new ground following previous rejection under § 103,
despite maxim that "anticipation is the epitome of obviousness").

While it is commonly understood that prior art references that anticipate
a claim will usually render that claim obvious, it is not necessarily
true that a verdict of nonobviousness forecloses anticipation. The tests for
anticipation and obviousness are different. See, e.g., Duro-Last, Inc. v. Custom
Seal, Inc., 321 F.3d 1098, 1107-08 (Fed. Cir. 2003) ("Succinctly put, the
various unenforceability and invalidity defenses that may be raised by a
defendant--inequitable conduct, the several forms of anticipation and loss of
right under § 102, and obviousness under § 103--require different elements of
proof.")

(...)

This is precisely why our precedent has rejected reliance on the "legal homily"
that "anticipation is the epitome of obviousness." Mendenhall, 5 F.3d at 1563.
We have expressly upheld a jury verdict of anticipation under § 102(b),
even when the same jury found the patent nonobvious under § 103. Id. Though the
dissent argues that a "long line of precedent" supports its argument that every
anticipated claim is obvious, not a single one of the cases it cites actually
holds that the "epitome" maxim precludes a jury from finding a patent invalid
under § 102, simply because it is nonobvious under § 103.

See earlier IPBiz post: PTAB repeats “anticipation is the epitome of obviousness.”

The Salon post began with the text After the New York Times revealed that Montana Democratic Sen. John Walsh had plagiarized his master’s thesis for the U.S. Army War College, Allen West brought the knives out. Apart from getting facts wrong [it was not a Master's thesis, but rather a paper for a Master's degree at the War College; certain text was copied without attribution, but the whole paper was not copied], the implication by Salon that the copying was uncovered in a political context is correct. The assertion about West is also politically-motivated. So also were charges about Glenn Poshard.

But the underlying "bad act" is different as between John Walsh and Adam West. Walsh was getting a degree for academic work, which was represented to be original to the granting institution. West was not.

The response was different. Walsh blamed stress. West immediately corrected the problem.

In the ongoing discussion of the Malcolm Gladwell copying, Gladwell's allusion to his earlier essay amounts to "who cares".
In Walsh's case, the answer is --the War College does.-- Gladwell's essay alluded to the Laurence Tribe incident, but conveniently ignored the ghost writing aspect. Indeed, legal scholarship is a culture of copying. But the War College should be different, and the outcome of the Walsh matter in Carlisle suggests it is.

Friday, December 12, 2014

Judge Sleet found issues with four of the five Cubist patents related to daptomycin.

As to the '967 patent:

The court notes initially that several of Cubist's counterarguments as to why
the Woodworm article does not anticipate are more appropriately directed at an
obviousness inquiry. Questions concerning the motivations of one skilled in the
art, or whether the Woodworm article teaches away from the '967 Patent do not
weigh on anticipation. See Bristol-Myers Squibb Co. v. Ben Venue Labs., Inc.,
246 F.3d 1368,1378 (Fed. Cir. 2001) ("[A] reference is no less anticipatory if,
after disclosing the invention, the reference then disparages it. Thus, the
question whether a reference 'teaches away' from the invention is inapplicable
to an anticipation analysis." (quoting Celeritas Techs., Ltd. v. Rockwell Int'l
Corp., 150 F.3d 1354, 1361 (Fed. Cir. 1998))); see also Cohesive Techs., Inc. v.
Waters Corp., 543 F.3d 1351, 1364 (Fed. Cir. 2008) ("The tests for anticipation
and obviousness are different. . . . [O]bviousness requires analysis of
secondary considerations of nonobviousness, while secondary considerations are
not an element of a claim of anticipation.").

AND

Turning first to the question of whether the Woodworm article discloses all of
the claimed elements, the court notes that Cubist also spends considerable time
discussing the experiments conducted in the Woodworm article, rather than
focusing on the particular disclosure at issue, which was a prediction or
suggestion for future study. But Hospira is correct that "anticipation
does not require actual performance of suggestions in a disclosure." See
Bristol-Myers Squibb, 246 F.3d at 1379. Thus, the only element Cubist contests
is whether the Woodworm article inherently discloses "minimizing skeletal muscle
toxicity." The court finds that it does. Regardless of whether one skilled in
the art would be aware of it, following the suggestion disclosed by the
Woodworth article (4-6 mg/kg/day) would have the physiological effect of
minimizing skeletal muscle toxicity. (Tr. at 1028 (Guglielmo).) This
cause-and-effect was the same at the time of the '967 priority date as it was
when the Woodworth article was published. Cubist's expert Dr. Guglielmo conceded
that he had difficulty grasping the concept of inherent disclosures whenmultiple suggestions are offered in the prior art reference. (Id. at 1028-32.)
Nonetheless, the law is clear that the "disclosure of multiple examples" does
not "render[] one example less anticipatory." Leggett & Platt, Inc. v. VUTEk,
Inc., 537 F.3d 1349, 1356 (Fed. Cir. 2008). "Under the principles of inherency,
if the prior art necessarily functions in accordance with, or includes, the
claimed limitations, it anticipates." In re Cruciferous SproutLitig., 301 F.3d
1343,1349 (Fed. Cir. 2002). The court finds that minimizing skeletal muscle
toxicity was a necessary accompaniment to the other disclosed claimed
limitations and therefore was inherently disclosed by the Woodworm article.

As to enablement

Cubist's primary argument, however, is that, even if Woodworm discloses the
necessary elements of the '967 Patent claims, they are not enabled by the
disclosure. "An anticipating reference must be enabling; that is, the
description must be such that a person of ordinary skill in the field of the
invention can practice the subject matter based on the reference, without undue
experimentation." Sanofi-Synthelabo v. Apotex, Inc., 550 F.3d 1075, 1082 (Fed.
Cir. 2008). The patentee, however, bears the burden of overcoming the
presumption of prior art enablement by a preponderance of the evidence. See
Amgen Inc. v. Hoechst Marion Roussel, Inc., 314 F.3d 1313, 1355-56 (Fed. Cir.
2003).10 In overcoming this presumption, the patent holder should address
several factors: the quantity of experimentation that was actually needed, the
amount of guidance provided in the reference, the presence or absence of actual
examples of the experimental procedure, the state of the knowledge already
available concerning the subject matter at issue, and the predictability or
unpredictability in the specific area of science or technology. See id. at 1085.

10 Although it concedes that prior art patents have a presumption of enablement,
Cubist argues there should be no presumption of [*36] enablement for prior art
printed publications. (D.I. 126 at 8 n.7.) The Federal Circuit in Amgen never
squarely addressed this question, although it indicated that there should be no
distinction between patents and printed publications. See Amgen, 314 F.3d at
1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we
need not and do not so decide today."). The court finds this logical extension
appropriate. Whereas the claims of a valid patent must be enabling by statute,
35 U.S.C. § 112, the additional disclosures in the specification need not. Amgen
nonetheless held that both the claimed and unclaimed disclosures are presumed
enabling. Id. at 1355. The court finds that printed publications should receive
the same treatment as unclaimed disclosures. Moreover, patent examiners already
apply a presumption of enablement to printed publications during the prosecution
process. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).
10 Although it concedes that prior art patents have a presumption of enablement,
Cubist argues there should be no presumption of [*36] enablement for prior art
printed publications. (D.I. 126 at 8 n.7.) The Federal Circuit in Amgen never
squarely addressed this question, although it indicated that there should be no
distinction between patents and printed publications. See Amgen, 314 F.3d at
1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we
need not and do not so decide today."). The court finds this logical extension
appropriate. Whereas the claims of a valid patent must be enabling by statute,
35 U.S.C. § 112, the additional disclosures in the specification need not. Amgen
nonetheless held that both the claimed and unclaimed disclosures are presumed
enabling. Id. at 1355. The court finds that printed publications should receive
the same treatment as unclaimed disclosures. Moreover, patent examiners already
apply a presumption of enablement to printed publications during the prosecution
process. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).

10 Although it concedes that prior art patents have a presumption of enablement,
Cubist argues there should be no presumption of [*36] enablement for prior art
printed publications. (D.I. 126 at 8 n.7.) The Federal Circuit in Amgen never
squarely addressed this question, although it indicated that there should be no
distinction between patents and printed publications. See Amgen, 314 F.3d at
1355 n.22 ("We note that by logical extension, our reasoning here might also
apply to prior art printed publications as well, but as Sugimoto is a patent we
need not and do not so decide today."). The court finds this logical extension
appropriate. Whereas the claims of a valid patent must be enabling by statute,
35 U.S.C. § 112, the additional disclosures in the specification need not. Amgen
nonetheless held that both the claimed and unclaimed disclosures are presumed
enabling. Id. at 1355. The court finds that printed publications should receive
the same treatment as unclaimed disclosures. Moreover, patent examiners already
apply a presumption of enablement to printed publications during the prosecution
process. See In re Antor Media Corp., 689 F.3d 1282, 1289 (Fed. Cir. 2012).

Bottom line as to the '967 patent

The novelty requirement of patent law embodies the policy that private entities
should not be able to obtain patents "whose effects are to remove existent
knowledge from the public domain, or to restrict free access to materials
already available." See Bonito Boats, Inc. v. Thunder Craft Boats, Inc., 489
U.S. 141, 146, 109 S. Ct. 971, 103 L. Ed. 2d 118 (1989) (quoting Graham v. John
Deere Co. of Kan. City, 383 U.S. 1, 6, 86 S. Ct. 684, 15 L. Ed. 2d 545 (1966)).
The court finds that Hospira has demonstrated by clear and convincing evidence
that the Woodworth article disclosed each of the elements of the claims of the
'967 Patent, expressly or inherently. Cubist has not shown by a preponderance of
the evidence that the Woodworth article was not enabling. Thus, Woodworth
anticipates the '967 Patent and renders it invalid, pursuant to 35 U.S.C. § 102.

As a point of law, anticipation is not the epitome of obviousness:

A finding that a patent is anticipated under § 102 often--but not
necessarily--indicates that the patent is obvious under § 103. Cohesive Techs.,
543 F.3d at 1364 & n.2 (Fed. Cir. 2008) ("[O]ur precedent has rejected reliance
on the 'legal homily' that 'anticipation is the epitome of obviousness.'"
(quoting Mendenhall v. Cedarapids, Inc., 5 F.3d 1557, 1563 (Fed. Cir. 1993))).

The tests for anticipation and obviousness are different. Obviousness
can be proven by combining existing prior art references, while
anticipation requires all elements of a claim to be disclosed within a
single reference. Moreover, obviousness requires analysis of secondary
considerations of nonobviousness, while secondary considerations are
not an element of a claim of anticipation. And although anticipation
can be proven inherently, proof of inherent anticipation is not the
same as proof of obviousness.

Id. at 1364 (internal citations omitted). Therefore, although the court found
the '967 Patent to be anticipated, a separate obviousness analysis is still
required.

As to secondary considerations:

As Hospira points out, however, the claims of the '967 and '689 Patents are not
truly commensurate with the long-felt need Cubist puts forth--treatment of
serious infections like SAE. The claims cover bacterial infections generally. As
Cubist's [*50] expert testified, Eli Lilly had previously been successful using
daptomycin to treat some infections. (Id.) Moreover, vancomycin was the standard
treatment for many of these same infections. (Tr. at 949-50 (Guglielmo).) Thus,
for much of what the dosing patents claim, there was no long-felt need. See
Muniauction, 532 F.3d at 1328 n.4 ("[C]laims which are broad enough to read on
obvious subject matter are unpatentable even though they also read on nonobvious
subject matter." (quoting In re Lintner, 458 F.2d 1013, 1015, 59 C.C.P.A. 1004
(C.C.P.A. 1972))).

(...)

Thus, there is a disconnect between what the dosing patents actually claim and
the secondary considerations Cubist offers. The court is not convinced that the
objective indicia cited by Cubist are entitled to significant weight; and any
weight certain factors may have does not overcome Hospira's prima facie showing
of obviousness. See Muniauction, 532 F.3d at 1327 ("[T]o the extent that some of
the factors arguably meet the nexus requirement, their relationship to the
claims is simply too attenuated to overcome the strong prima facie demonstration
by Thomson that the claims are obvious."); see also Pfizer, 480 F.3d at 1372
("Even if Pfizer showed that amlodipine besylate exhibits unexpectedly superior
results, this secondary consideration does not overcome the strong showing of
obviousness in this case."). Hospira has shown by clear and convincing evidence
that the '967 and '689 Patents are obvious and therefore invalid under 35 U.S.C.
§ 103.

Ultimately, the court finds that secondary considerations do not upset Hospira's
prima facie showing that the asserted claims of the purity patents are obvious.
Hospira has made this showing by clear and convincing evidence. The '238 and
'342 Patents are invalid as obvious under § 103.

The bottom line

For the reasons stated above, the court concludes that: (1) the [*72]
Certificate of Correction issued for the RE'071 Patent is not invalid, and
therefore Hospira's products infringe the RE'071 Patent; (2) the RE'071 Patent
is not invalid for lack of written description; (3) the RE'071 Patent is not
invalid for improper recapture; (4) a revision to the court's claim construction
of the term "daptomycin" in the '967, '689, '238, and '342 Patents is not
warranted, and therefore Hospira's products infringe the '967, '689, '238, and
'342 Patents; (5) the '967, '689, '238, and '342 Patents are not invalid for
lack of written description; (6) the asserted claims of the '967 Patent are
invalid due to anticipation; (7) the asserted claims of the '967 and '689
Patents are invalid due to obviousness; (8) claim 98 of the '238 Patent is
invalid as anticipated; (9) the asserted claims of the '238 and '342 Patents are
invalid due to obviousness; (10) Hospira's § 102(f) derivation defense is
untimely and precluded; and (11) each of the parties' Rule 52(c) motions are
granted in part and denied in part.

The Economist discusses the "patent fiction" of increased Chinese filings.

That is why it is useful to see what percentage of Chinese invention patents are also filed at foreign patent offices, which tend to be more rigorous and transparent. (When a firm goes to the trouble of filing for patents globally, it is usually a sign that it believes its invention to be genuinely valuable.) Only about 5% of patents filed by local firms in China last year were also filed abroad, whereas over a third of patents originally filed by local firms in Japan were also filed elsewhere.

Almost all of the growth in China’s invention patents over the past three years has come from local firms, not from the Chinese divisions of multinationals. That suggests that the bureaucrats’ orders are responsible, rather than the emergence of a local ecosystem of innovation as seen in Silicon Valley. Intellectual-property rights do matter, but merely churning out patents does little to advance innovation.

In re Franciscan Vineyards

The opposer lost in this trademark appeal at the CAFC.

Domaines Pinnacle, a Canadian corporation and pro- ducer of alcoholic ice apple wines, filed an intent-to-use application at the PTO, seeking to register a DOMAINE PINNACLE mark for “apple juices and apple-based non- alcoholic beverages.” Opinion at *1. Franciscan opposed the registration, alleging that Domaines Pinnacle’s mark would likely cause confusion with Franciscan’s previously registered and used marks PINNACLES for “wine” and PINNACLES RANCHES for “wines.” Id.
The Board evaluated the following DuPont factors: (1) the similarity or dissimilarity of the marks in their entireties (“the first DuPont factor”); (2) the similarity or dissimilarity and nature of the goods or services as de- scribed in an application or registration or in connection with which a prior mark is in use (“the second DuPont factor”); (3) the similarity or dissimilarity of established, likely-to-continue trade channels (“the third DuPont factor”); (4) the conditions under which and the buyers to whom sales are made (“the fourth DuPont factor”); (5) the fame of the prior mark (“the fifth DuPont factor”); (6) the number and nature of similar marks in use on similar goods (“the sixth DuPont factor”); and (7) the market interface between the applicant and the owner of a prior mark (“the tenth DuPont factor”). Id. at *3–8; see also In re E.I. DuPont DeNemours & Co., 476 F.2d 1357, 1361 (CCPA 1973) (listing factors relevant to likelihood of confusion determination).

Wednesday, December 10, 2014

USPTO says no to Comfyballs

Cubist patent invalidation: a very tough start to a relatively sound strategic deal of Merck

U.S. District Judge Gregory Sleet in D. Del. [ Wilmington, Delaware], ruled Dec. 8. that claims of four patents of Cubist Pharma are invalid. Cubist is being bought by Merck & Co. (MRK) for $8.4 billion.

Tuesday, December 09, 2014

The Patent Office wins in CAFC case, JAPANESE FOUNDATION FOR CANCER RESEARCH vs. Lee

JAPANESE FOUNDATION FOR CANCER RESEARCH vs. Lee is an appeal by the USPTO of a decision by the ED Va that
the PTO acted arbitrarily and capriciously, and abused its discretion, when it refused to withdraw the terminal
disclaimer on U.S. Patent No. 6,194,187 (“’187 patent”).

The USPTO wins.

Footnote 6:

The district court suggests that the “PTO is the
Foundation’s only source of adequate relief.”
District Court Op., 2013 WL 3894156, at *9.
We note that in circumstances where a client may be deprived of a claim
based on its attorney’s conduct, and the fa
cts indicate that the “attorney’s conduct falls substantially below what is
reasonable under the circumstances, the client’s remedy is
against the attorney in a suit for malpractice.” Link v.Wabash R.R.
Co., 370 U.S. 626, 634, n.10(1962)
.

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.